Viz Communications, Inc. v. Redsun, 2004 U.S. Dist. LEXIS 24481 (N.D. Cal. Mar. 8, 2004).
Factual Background Edit
Plaintiff, a California company, publishes magazines, videotapes, and comic books in the genre of Japanese cartoons known as anime and manga. One of its publications is a magazine called “Animerica” whose title is a combination of “anime” and “America.” Plaintiff owns the federally registered mark ANIMERICA and has used it continuously since 1992. Plaintiff operates a website at “animerica-mag.com.”
In 1997, defendant, a Japanese entity, began using the domain name “animerica.com” for a website providing adult-content anime. A few months after defendant started its website, defendant contacted plaintiff requesting advertising space for its “animerica.com” website in plaintiff’s ANIMERICA magazine and offering to advertise plaintiff’s magazine on the “animerica.com” website.
Plaintiff declined the advertising offers because plaintiff targeted a young audience instead of defendant’s adult-oriented audience. Plaintiff also expressed concern about confusion from defendant’s use of “animerica.com.” Plaintiff then offered to purchase the “animerica.com” domain name, but defendant refused and continued to offer adult-content anime at that name.
Trial Court Proceedings Edit
Plaintiff filed this suit for dilution, trademark infringement, and unfair competition, and sought a preliminary injunction. The court summarily dismissed the likelihood of success on the merits of plaintiff’s dilution claim, finding the record unclear on whether the mark ANIMERICA was sufficiently distinctive to be famous. It also commented that ANIMERICA was not a “universal household word like ‘Coca-Cola’ or ‘Kodak.’” However, the court held that plaintiff demonstrated a likelihood of success on the merits of its trademark infringement claim, finding that the marks were identical; both parties provided anime content; plaintiff’s target audience of 16-years-old and over could overlap with defendant’s customers; both parties used the Internet to market their products and services; plaintiff’s advertising strengthened its suggestive mark; and there was some evidence of actual confusion.
Turning to remedies, the court refused plaintiff’s request to freeze defendant’s assets because there was insufficient evidence that defendant engaged in egregious conduct or had a willful intent. Regarding injunctive relief, the court stated that the “relief granted must be justified by the strength of [plaintiff’s] showing relative to the nature and severity of the relative hardships the parties would suffer were relief to be granted.” After weighing the evidence, the court concluded that a complete ban on defendant’s use of “animerica.com” was “neither justified nor necessary to avoid confusion pending trial” because: (1) plaintiff’s mark was not strong, (2) confusion was most likely to occur in the United States, but the Japanese-based defendant derived “significant business” outside of the Untied States, and (3) the court was “not convinced that a disclaimer would be an inadequate preliminary remedy to avert confusion in an Internet setting.”
The court then preliminarily enjoined defendant from transferring the “animerica.com” domain name, from redirecting the domain name to another site, and from using ANIMERICA in metatags. The court allowed defendant to continue to use the “animerica.com” domain name for its adult-content anime, but only if it “displays, at the top of the [home] page in [a] manner that is more prominent than any other text on the web page” the following disclaimer “THIS WEBSITE IS NOT AFFILIATED WITH ANIMERICA MAGAZINE OR VIZ COMMUNICATIONS, INC.” and the URL for plaintiff’s ANIMERICA magazine.
The court also enjoined defendant from using “animerica.com” in any e-mail addresses, advertisements, or web pages unless accompanied by a similar disclaimer “immediately following the domain name or e-mail address.”
- This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).